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Wednesday, 28 August 2013

Instagram
recently created waves of animosity among developers who have launched apps
using Instagram’s API.Now owned by
Facebook,Instagram is a photo- and video-sharing service that connects with
users’ social media profiles.It claims
over 100 million active users uploading more than 58 new photographs every
second.
Users also benefit from a number of symbiotic apps that have been developed
using Instagram’s API.Such apps include
services that print and either mail or email Instagram photos, provide search and
analysis functions based on the user’s Instagram account activity and
interests, and numerous other apps that function in combination with
Instagram’s services.However, Instagram
has upset some of these app developers by updating its Instagram Brand Guidelines
to state: “Don’t: Use ‘Instagram,’ ‘IG,’ ‘Insta’ or ‘Gram’ in your app name.”Instagram understandably wants to protect its brand’s good
will and prevent consumer confusion or trade mark dilution.However, it should have considered these IP
issues earlier in its history.App-owners
whose app names violate this new guideline are upset by letters sent by
Instagram requesting that they change their brand names after they have built their
own good will and consumer recognition.As it was growing its user base and encouraging developers to build
complementary apps, Instagram allowed apps to use “Insta” or “Gram” in their
app names, presumably to remind users that those apps required, or at least
functioned best with, an Instagram account.In those early days, Instagram’s Instagram API Terms of Use
stated, “[w]hile you cannot use the word ‘Instagram’ or ‘IG’ in your
product’s name, it’s ok to use one (but not both) of the following: ‘Insta’ or
‘Gram.’”Unfortunately for the
developers, the Terms of Use also stated, “we reserve the right to reject any
use of these terms in connection with the use of the Instagram API,” and
indeed, its current API Terms of Use omits the statement regarding the approved use of
either “Insta” or “Gram.”

While Instagram did reserve the right to make such a change
to its Terms of Use, this reversal of policy does a disservice to its partners, its users
and itself by applying it retroactively.When Instagram tried to change its user Terms of Service to allow it to use
or sell users’ photographs for advertising purposes
, users deactivated their accounts in droves, and Instagram quickly reversed course on the new policy.Similarly,
according to this article in TechCrunch, affected developers are considering shutting down their apps entirely rather
than changing their brand names.Does
Instagram really want to see the demise of apps that drive consumers to
Instagram or help keep those consumers loyal to Instagram?Or will developers decide that the short term
brand damage associated with a name change will ultimately be outweighed by the
long term benefits of being associated with Instagram?Time will tell.

Instagram's new policies may create many stray apps

Regardless, this Kat does think
Instagram should take a long hard look at its trade mark strategy.Instagram may have the right to block from
Instagram compatibility any apps that refuse to remove “Insta” or “Gram” from
their names.However, it may not have a
strong ability to otherwise pursue objecting app developers for trade mark
infringement.Because
Instagram officially permitted developers to use the elements
“Insta” and “Gram” in their own brand identities, Instagram seemingly eroded its claim to exclusive use of
those portions of the mark other than as used together.That it permitted developers to use “Insta”
or “Gram” for nearly three years prior to this new guideline change may make equitable
estoppel defenses insurmountable for Instagram in the event of any trade mark infringement litigation.Also, this Kat thinks that a claim of
consumer confusion is also in jeopardy because of the ubiquity of the use of
“Insta” or “Gram” in the names of previously released apps, including (to name
just a few) Instaprint, Instadrop, Instagallery, Stickygram and Statigram. Consumers are quite used to the fact that other apps use "Insta" or "Gram," and are thus less likely to assume that all such apps originate from Instagram. On the other hand, all such app brands are so named specifically to highlight a connectivity to Instagram. If Instagram no longer allows an app to synch with Instagram due to the app's refusal to rebrand, the app name could become deceptive to consumers and falsely suggest an endorsement by Instagram.

Regardless of how Instagram will fare in its
trade mark protection efforts, this situation is a good reminder that even
startups who want to encourage early adoption, brand loyalty and word-of-mouth
recommendations must be wary of how their actions might affect the strength of
their intellectual property rights.

What do readers
think? How might Instagram fare in another jurisdiction?

9 comments:

I suspect there are so many app developers out there that Instagram is probably not to worried about upsetting some of them. They need Instagram more than vice versa. However I'm sure they've learned not to upset their users who can easily go elsewhere. News travels fast in the hyperconnected online community who seem increasingly less loyal to brands.

I think the author is correct: the cat is out of the bag - and IG should have set the ground rules differently instead of trying to change its scheme after gaining momentum. It is a selfish and thoughtless move, inconsiderate of those who have built up their own good will, and paints IG as just another entity that wants to take regardless of anyone else.

I don't know that IG could reasonably lock up the terms INSTA or GRAM whether or not the old API included those conditions. Both of those elements had meetings - or at least implications - before IG created the portmanteau, and I think that Kat concedes too much when he posits that inclusion of either (not both) of those elements necessarily implies a connection to IG.

It takes only a small imaginative leap to go from, for instance, INSTAPRINT to "prints of things (including photographs) provided in a quick or timely fashion - almost instantly." I don't know how strong the argument for consumer confusion would be if the pictures were sourced from Flickr instead of IG.

Kat concedes too much when he posits that the elements imply a connection with IG.

@Ben, your point is well taken. I think it would be a case-by-case analysis on whether the name becomes deceptive or still stands on its own. Instaprint, as you note, would likely fare well. Instawar, on the other hand, likely less so because its name is meant as a conjunction of what it does: pit two Instagram photos against each other in a user voting war.

To me, a child of the late 1940's, "gram" brings to mind "Radiogram" and "Gramaphone", the latter having been a registered trade mark until it lost its UK registration due to common use as a descriptive term for all Phonographs.

Question: How relevant is what istagramn has publish in its Brand guideline? Is not up to Instagram to decide how broad is the scope of protection conferred by their TM...I assume. This should be decided on a case by case comparing eventually the alleged infringing TM and related goods&services with the Instragram's rights

"this situation is a good reminder that even startups who want to encourage early adoption, brand loyalty and word-of-mouth recommendations must be wary of how their actions might affect the strength of their intellectual property rights." Great conclusion! Brand protection needs to be a main concern for businesses, right from the beginning. It is simpler and much more cost effective.

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